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IPR: Considerations for R&D
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Considerations for R&D

BT 201805 IPR 01 编辑      本期的IPR栏目我们将为您介绍有关研发专利的相关内容。许多欧洲中小企业可能认为他们不在中国设立实验室或研究设施就等于企业在中国没有进行任何研发活动, 但事实上, 这些公司中绝大多数进行的研发活动至少包含以下一个方面:研究或发展。例如:一家中小企业与中国当地公司签订合同,利用他们的工程师将创新概念开发成商品或应用程序。在这个例子中,该企业确实未在中国设立研发机构,但已经就商品做了“发展”。知识产权是进驻中国的欧洲中小企业希望挖掘业务增长潜力的关键考虑因素。在中国从事研发工作时,从一开始就需要明确界定其权利,以避免日后出现分歧。

      首先最好明确知识产权的所有权,如果主发明人是非中国公民,欧洲中小企业在决定如何控制知识产权方面将具有更大力量。但是,如果中国团队在整个研发过程中会做出重要贡献,那么在谈判协议条款时,知识产权所有权将成为一个更加敏感的问题。此外,企业需要考虑中国个人发明人的法律地位。如果发明人是另一方的雇员,例如当地大学的研究人员,则发明人可能有合同义务将其知识产权转让给该雇主。忽视发明人现有义务可能会导致严重后果。如果欧洲中小企业仅仅在中国开展研发活动,知识产权的所有权就不是问题。企业可以选择以中国研发实体或其在中国境外的分支机构的名义提交专利申请。将知识产权落在海外公司将具备更大的灵活性,以满足未来业务运营和融资的需求。不过与此同时,也有越来越多的公司以中国企业实体申请知识产权,以符合中国政府的激励计划。

      另一个重要方面是知识产权许可证,这是一项合同,规定了允许协议方使用知识产权的地点、时间和方式,以及使用产权需付的费用或置换的条件 。在大多数研发合同中,许可证是一个关键要素。中国业务合作伙伴在市场和执行能力上的知识面越广,对授权方案的考虑就越多。所以在谈判之前,企业主应该仔细考虑知识产权许可方面的内容。

Many European SMEs may not consider that they conduct any R&D activities in China because they do not have a laboratory or research facility, but in reality, a high proportion of these companies engage in activities which fall under at least one of the terms: research or development. An example of R&D might include an SME that enters into a contract with a local company to use its engineers to develop a prototype into a commercial product or application.
 

Intellectual property is a critical consideration for European SMEs that come to China wishing to tap into the market potential for business growth, or the talent pool for technology development. When engaging in R&D in China, new intellectual property is being created, the rights to which need to be clearly defined from the outset to avoid disagreements later.

BT 201805 IPR 02Ownership of IP

If the primary inventors are non-Chinese citizens, European SMEs will have much more leverage in deciding how to control the IPR. If, however, the Chinese team is expected to make key contributions, IPR ownership will be a more sensitive issue when negotiating terms of an agreement. To retain the innovators, SMEs will need to include sufficient amount of rewards and incentives for them as individuals if the ownership of the innovation will not be granted to them. Additionally, SMEs will need to consider the legal status of Chinese individual inventors. If the inventor is an employee of another party, for example a researcher at a local university, the inventor may be under contractual duty to assign his/her IP rights to that employer. Ignoring the inventor’s existing legal duties can cause serious problems.
 

IP ownership is less of an issue if European SMEs simply set up their own entity in China to conduct all R&D activities. SMEs can choose to file patent applications under the name of the Chinese entity, or its affiliates outside China. Placing the IPR under an overseas entity may provide greater flexibilities to suit the future needs of business operations and financing. However, companies increasingly apply for IPR under their Chinese entities to qualify for incentive plans offered by local Chinese governments.
 

If European SMEs rely on their business partner to some extent, IPR ownership may be more complicated. Some common choices are listed as follows:
 

• Sole ownership of all IPR by the European SME
• Sole ownership of all IPR by Chinese business partners
• Co-ownership, shared between the European SME and the Chinese business partner.
 

Terms of the co-ownership can be largely defined by contracts. The ownership issue can be sensitive between foreign SMEs and Chinese business partners. Excessive fighting over ownerships will produce risks for future business co-operation. It is therefore advisable to keep revisiting the business models one has in place, and to always sign mutually agreed contracts on ownership, licensing and other legal tools to support shared business interests, so that ownership is clearly defined from the start. For example, if an SME realizes that the software tool it has developed can be used for another business model, to which their Chinese business partner has no connection, they may need to carefully craft the agreement in a way that will allow the SME the freedom to use the technology in other fields. Failure to do so will most likely lead to disputes in future.

BT 201805 IPR 05IP Licensing

An IP licence is a contract to permit where, when, and how IP can be used by another party, for free, for royalties, or in exchange for other services. In most R&D contracts, licensing is a key aspect. The greater leverage the business partner in China has in terms of knowledge about the market and execution ability, the more consideration is likely to be given to licensing options.
 

In practice, licensing is probably one of the most important legal tools that SMEs often overlook. Part of the reason is that SMEs are not always confident about the effectiveness and enforceability of the contracts they enter into with Chinese partners. For example, people may be afraid of unfair court rulings and difficulties with the enforcement of judgments. While such considerations may be justified in some cases, SMEs should not overlook the importance of using contracts, as lack of an agreement in writing will inevitably lead to disaster. IP licensing options should be well thought out prior to negotiations.
 

In China, common types of license such as exclusive and non-exclusive license are permitted. Laws and regulations are designed to give large amount of autonomy for the parties to decide what to do with their IP licenses. Parties can negotiate and reach a mutual agreement on the following key terms:
 

• Territory of the license: Does the license cover China or is it applicable worldwide? Is it better to have a license that covers a certain specified geographical area in China?
 

• Duration of the license: When does the license expire? How should it be renewed? Can the license be terminated under certain clearly-defined circumstances?
 

• Licensed IP: Are you only going to license your patents? What about copyrights and trademarks? How about less familiar types of IP such as graphic user interface, sensitive client information, special skills and so on? Some innovations may not be fully protected by the patent, trademark or copyright laws, but you may use the contract to protect yourself. To obtain more information about the protection of trade secrets, please refer to the Helpdesk guide for Protecting Trade Secrets in China and the Helpdesk guide to Using Contracts in China
 

• Royalties: You can choose a lump-sum payment, running royalties, etc., or even operate royalty-free for a certain period and then start charging. Issues like tax and auditing should be addressed as well.
 

• Limitations of the license: Do you have to give warranty or indemnify everything asked for by your Chinese partner? Think of ways to limit your exposure to liabilities.

BT 201805 IPR 07European SMEs should be aware that some license contracts need to be registered with appropriate Chinese authorities in order to be fully enforceable in China. For example, trade mark license contract needs to be registered with the China Trade Mark Office (CTMO) and the patent license contract must be registered with the State Intellectual Property Office (SIPO). Extra costs will be levied when registering license contracts with different Chinese IP authorities.
 

In the context of joint IP development, European SMEs should keep in mind that Chinese laws do not allow foreign companies to retain ownership of improvements that are made by Chinese parties, unless the Chinese parties are being remunerated in some way for these inventions. This remuneration could be in the form of cash, shared profits, equity interest, or other types of property rights. Chinese laws also require the foreign company providing technology to authorise the quality and usefulness of the technology, and to bear the liabilities if the technology turns out to have infringed others’ legal rights. Therefore, through discussions, European SMEs and their Chinese business partners should decide on fair and workable solutions before proceeding with a deal.

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